A federal District Court ruled that broadcaster Bonneville International did not infringe the "playing what we want" trademark of SparkNet Communications.
NEW YORK -- A federal District Court ruled that broadcaster Bonneville International did not infringe the "playing what we want" trademark of SparkNet Communications.
SparkNet, a joint venture between Vancouver-based consultant Pat Bohn and Nashville-based consultant Garry Wall, sued Bonneville in May for infringing its trademark on stations in St. Louis, Phoenix, Chicago and San Francisco.
SparkNet claimed that Bonneville's use of the slogans "70's, 80's... whatever we want," "70's, 80's... whatever we feel like," and "today's new music... and whatever we want" were confusingly similar to its "playing what we want" trademark. SparkNet has licensed the slogan and the "Jack FM" trademark to 15 stations in the United States, including Infinity outlets in New York, Los Angeles and Dallas.
In a ruling issued Sept. 12, the Chicago-based court wrote that Bonneville's use of the slogans were descriptive and did not rise to the level of infringement. Bonneville's slogans "fairly describe the music it plays and its slogans are used in connection with its own radio frequencies and station names," the decision states. The court also said that Bonneville does not compete unfairly with SparkNet.
"If every radio station that adopts a slogan containing one or more overlapping words, which describe the music they play, is brought to court, only the lawyers will benefit," Judge Morton Denlow wrote.
SparkNet says it will appeal the decision to the Seventh Circuit Court of Appeals. Expressing disappointment with the ruling, an attorney for SparkNet, Derek Newman with Newman & Newman in Seattle, calls the decision "inconsistent with the law."
He contends the mark does more than describe a product -- it portrays the Jack format's essential attitude in the same way the "just do it" trademark conveys the attitude of Nike products.
"Just because listeners don't identify stations by slogans doesn't mean they don't have any significance," Newman tells ELW. "A trademark identifies the source of the goods and services."
It remains to be seen if a similar conclusion will be reached in the U.S. District Court in San Diego where SparkNet has a case pending against Clear Channel. That suit alleges that Clear Channel is a cyber squatter and trademark infringer.
The San Diego suit claims that Clear Channel may not lawfully use the URL www.JackFMSanDiego.com for KMYI (My 94.1) San Diego. SparkNet also alleges that usage of the slogan "playing whatever we want" on Clear Channel's WLTY (Steve FM) Columbia, S.C., is infringing and that the slogan "playing whatever the hell we want" airing on KDRB (The Bus) Des Moines is "confusingly similar" to SparkNet's trademark.